Ohio State University has filed a trademark application with the United States Patent and Trademark Office for “THE,” in international class 25 for use on clothing, namely, t-shirts, baseball caps, and hats.  Ohio State has frequently, much to the chagrin of anyone who did not attend the university, referred to it as “The Ohio State University.”  What makes the newest trademark application so intriguing is that it is simply for “THE,” and not the additional words.

 Although this is a highly publicized application in the news, this is not the first application solely for “THE.”  Marc Jacobs has a pending trademark application for “THE” in international classes 18, handbags, cases, back packs, etc., and 25, clothing.  Interestingly, this application was approved by the USPTO without issue, except the USPTO has now, on August 6, 2019, withdrawn the application for further review.  This was done prior to the filing of the Ohio State University trademark application was filed, so it is even more curious.  It’s extremely surprising that the Marc Jacobs application was approved in the first place so easily for two main reasons: (1) the specimen of use submitted for the Marc Jacobs mark shows the word “THE” as being used only as part of a larger overall mark, “THE BACKPACK MARC JACOBS;” and (2) “THE” is not being used to denote the source of the goods, but just being used as a logo on the bag itself.  The USPTO should have presumably issued an office action relating to these items, but perhaps these items will be examined now that the USPTO has withdrawn the application for further review.

It is unclear at this point why the Marc Jacobs application was withdrawn by the USPTO for further consideration, but we can speculate that it may be due to the items raised above.  Whatever happens with that case may very well impact the Ohio State University case.  The Ohio State University also submitted a specimen showing “THE” being used as simply a logo on a shirt, and not as the label or branding.  This could, and should, result in an office action.  There could also be some likelihood of confusion arguments made by the USPTO if the Marc Jacobs application is ultimately approved.

The USPTO can be very inconsistent in their determinations.  It does appear that the USPTO has realized they should have reviewed the Marc Jacobs application for perhaps those items discussed above, and has therefore decided to perform further analysis and due diligence at this time.  At the least, the USPTO should require an additional specimen of use showing “THE” being used in the labeling/branding, and in use by itself and not as part of a larger mark.  Ohio State University will be keeping a close eye on the Marc Jacobs application. 

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